Provisional Patent Applications

I get a lot of questions from clients about “provisional patents." Let me just start this blog by clarifying once and for all that there is no such thing as a “provisional patent” anywhere in the Patent Act. However, since 1995 the USPTO has offered inventors the option of filing a provisional patent application under §11(b) of the Patent Act. Provisional applications have some interesting advantages of which you should be aware.

What is a provisional patent application?

First, let’s be clear about exactly what a provisional patent “is” and “is not.”

A provisional patent application “is”:

An official application filed with the USPTO that makes your invention “patent pending.”

Effective in meeting the statutory filing deadlines set forth in §102(b) of the Patent Act commonly known as the “statutory bars.”

Effective in meeting the new “first-to-file” requirements adopted in the America Invents Act.

Subject to the “new matter” rule. (i.e., in order to obtain the benefit of the filing date of a provisional application, the subject matter claimed in a non-provisional application must be disclosed in the provisional application).

Required to contain a written description of the invention and drawings or photographs necessary to understand the invention.

Going to automatically become abandoned 12 months after the provisional filing date by operation of law.

A provisional patent application “is not”:

Going to ever issue into a US patent! A provisional application cannot result in a US patent unless a corresponding non-provisional application for a patent is filed that claims the benefit of the earlier filed provisional application. (Technically, a provisional application can be converted into a non-provisional application by petition, but doing so negatively affects the patent term of any subsequently issued patent so nobody ever does it).

Going to be examined on its merits by an examiner at the USPTO.

Going to be published.

Available for design patent applications.

Subject to many of the formality requirements of non-provisional applications.

Why consider a Provisional Patent?

One of the main reasons to consider filing a provisional patent application is that it can lower your up-front costs on your first filing with the USPTO. Because a provisional patent does not have to meet many of the formal requirements of a non-provisional patent, such as claims, an oath, declaration, or prior art disclosure, it can be easier to put together and save on up-front legal fees. However, since the subject matter claimed in a non-provisional application must be disclosed in the provisional application, it is important not to skimp too much on the written description contained in the provisional application. In fact, I recommend that the disclosure of the invention in the provisional application be as complete as possible so that the likelihood that “new matter” issues will arise during the prosecution of a later filed non-provisional application are reduced to the greatest extent possible. Also, the more complete your provisional application is, the less you will spend in legal fees in drafting a non-provisional application later.

Another reason to consider a provisional application is that it provides you with 12 months to explore the commercial development of your invention. During this period you are “patent pending.” This means that you can disclose or sell your invention without risking your right to pursue a patent. Should someone decide to steal your idea while it is “patent pending” you have the right to pursue a patent on the idea and if a patent is eventually issued you could pursue claims of infringement.

Finally, a provisional application is useful if you believe your competitors are likely pursuing similar technology or you are running up against one of the statutory bars. Because provisional applications do not have to contain the typical formalities of non-provisional applications, they can be put together in a shorter time to meet filing deadlines or file ahead of a competitor.